Ariosa v. Sequenom: Petitioning the Federal Circuit to Reverse Course on Patent Eligibility

By Gene Quinn
September 9, 2015

Tom-Goldstein-300-400

Tom Goldstein

On June 12, 2015, the United States Court of Appeals for the Federal Circuit issued a decision in Ariosa Diagnostics, Inc. v. Sequenom, Inc. The decision dealt with whether a non-invasive method for detecting paternally inherited cell-free fetal DNA (“cffDNA”) from a blood sample of the pregnant woman carrying a fetus. See U.S. Patent No. 6,258,540. The district court ruled that the method claims were patent ineligible and the Federal Circuit agreed. Judge Linn, who concurred, wrote that the innovation deserves patent protection, but also that the “sweeping language of the test set out in Mayo” requires a determination that the claims are patent ineligible.

The Federal Circuit decision has been widely criticized (see here and here, for example). Sequenom has asked for reconsideration en banc, and twelve amici groups have separately filed briefs in support of Sequenom’s petition for reconsideration en banc. On September 3, 2015, the Federal Circuit requested a response from Ariosa et al.

Sequenom is being represented by Tom Goldstein, co-founder of the SCOTUS blog. Goldstein has served as counsel in over 100 Supreme Court cases over the last 15 years. His presence in this petition for rehearing sends a clear message, namely that Sequenom plans to push this issue as far as they can, including petitioning the Supreme Court if necessary.

I had the opportunity to speak with Goldstein on the record for an interview on Monday, August 31, 2015. What follows is our discussion about the state of patent eligibility in the United States and the reasons why the Federal Circuit really should step in and rehear this case en banc.

Without further ado, here is my interview with Tom Goldstein.


QUINN: Thanks, Tom, for taking the time to chat with me today. I know last week there was some action in a case that you’re intimately involved in regarding patent eligibility, with about a dozen amicus briefs filed in support of your position. So I wanted to reach out to you and talk to you about the case. Can you tell us a little bit about the case and where we stand procedurally before we get into any substance?

GOLDSTEIN: Sure. This is a 101 eligibility case involving a biologic test, and it’s one of the cases in which the Federal Circuit has been trying to implement the Supreme Court’s 101 eligibility decisions. Cases like Mayo, Myriad and the like. And in this case we have the discovery of something incredibly new and important, which is that you can have cell free fetal DNA in the blood plasma of a mother, and you can distinguish it from the mother’s DNA by looking for the father’s sequences. What that means there’s a way of being able to identify hereditary traits, potential problems with fetuses that’s entirely not intrusive.

The invention claims not the cell free DNA but rather a method that involves amplifying the cell free DNA and applying various processes on it to use it as a diagnostic tool. It’s an incredibly significant discovery. Nobody disputes that. The Lancet article that describes the invention, it’s been cited a thousand times, as an illustration. And the Federal Circuit, a panel of three judges held that it was not patent eligible on the grounds that if you are dealing with a finding like this one, something as a law of nature, something that exists in the world then the discovery of that plus previously known techniques, like amplifying DNA, makes it not patent eligible.

One of the judges on the panel Judge Linn specially concurred to say this doesn’t make any sense, but he wrote that he thought he was required to reach this result by the Supreme Court’s decision in Mayo. So that’s where we are today.

This is a really important question both with respect to biologics and other interventions and also as the Federal Circuit does work with the Supreme Court’s body of precedents. We have basically two principle points. One is that in our view the Federal Circuit has to do a better job rationalizing and reconciling two different sets of precedent. One is the set of modern cases and the second is an older case that the modern cases embrace, Diamond vs. Diehr, which as we understand it adopts exactly the opposite rule from the Federal Circuit in this case, which is that the combination is what has to be new not the individual processes. And then second we believe that we have a case that fits squarely within what the Supreme Court intended to remain patent eligible after those more modern cases. So we filed an en banc petition and we thought that there would be amicus support for sure. But what we didn’t expect, to be honest, was the outpouring of interest and support that we received.

Virtually every interested party that we mentioned the case to was immediately interested in filing an amicus brief. There were many more than 12 amicus parties. They joined together in a bunch of briefs. We didn’t even know that some of the briefs were going to be filed. There were some that just came in on filing day and we were pleasantly surprised. We have still companies that are in a similar position, but also patent academics, leading people in the field saying this seems to go way too far with respect to 101 and the law is a real mess and en banc review is really a responsibility, to take the issue on in the interest of a rational patent system.

So the petition is in. The 12 amicus briefs that you mentioned are in. And now it’s in the hands of the Federal Circuit. We are waiting for the Federal Circuit to decide if it wants to request a response from the alleged infringer that succeeded in developing the patent. And if it does that and requests a response then there will be a vote in the Federal Circuit of whether or not to rehear the case en banc and if so then we’ll go through that whole process. If en banc is denied then we’ll proceed and try to persuade the Supreme Court. But the Federal Circuit needs to do the job of reconciling these precedents.

EDITORIAL NOTE: After this interview was completed, on September 3, 2015, the Federal Circuit requested a response from Ariosa and Natera. Ariosa and Natera have asked for a 30 day extension of time to respond, to which Sequenom has consented. If that extension is granted, which is anticipated, the due date for the response would be October 17, 2015.

QUINN: That was one question I wanted to ask you. With your name on the brief people who follow these issues would have to think that this is being set up for the next level.

GOLDSTEIN: Well, I think the client wanted that option for sure because once you lose in a court of appeals it’s very hard to get en banc review. We would much rather resolve it in the Federal Circuit. There’s no need to go to the Supreme Court, but not surprisingly any party has the right to take it up and I think the fact that they hired me does indicate their willingness to do so. We do think that this is something that the Federal Circuit can fix itself.

QUINN: I’m struck by all the problems that are being created by current 101 jurisprudence.

GOLDSTEIN: Yes.

QUINN: In my mind it boils down to the unfortunate reality that the Supreme Court has not defined what it means to be an abstract idea. In reading your petition for rehearing en banc the one line that jumped out at me was where you talked about how on some level everything is an abstract idea.

GOLDSTEIN: Yes, and everything is an elaboration on what’s been discovered before. So I think that the Supreme Court is in the middle of a process. We can’t look at cases like Mayo and Myriad as the end of the discussion. The court is relatively new to returning to patent issues, relatively new to 101 eligibility, and I would be surprised if they didn’t take some more 101 cases over the years. I don’t know when they’ll take the next one but I think they will be conscious of the need to further refine it. That they couldn’t answer every question, get everything right in the first cases. So if we have to, hopefully we’ll be able to show them that if the Federal Circuit didn’t hear the case en banc it’s because they agree with Judge Linn that this is just at the footsteps of the Supreme Court.

QUINN: Now, playing devil’s advocate for a moment and giving the Supreme Court the benefit of the doubt for a moment, which is difficult to do I know because they don’t seem to understand patents, they overstate things, and there’s a lot of dicta in these cases. They really turn these cases into an exercise in reading tea leaves.

GOLDSTEIN: Yes.

QUINN: But if you want to give the Supreme Court some benefit of the doubt here I think it has to be with respect to Mayo and Bilski, those two cases stand out because they took bad cases and they decided these very broad issues in a couple cases that should have been just thrown out on other issues. And that laid the foundation for a real mess I’m afraid.

GOLDSTEIN: Well, it is a great illustration of how important it is that the right case goes to the Supreme Court. Because the Supreme Court isn’t exposed to a lot of the cases and bad cases can make bad law. And you do have to think about cases like Bilski, about cases like Mayo as being ones that didn’t seem like good candidates to use to define 101 eligibility. And I think that the Court will take on some closer cases where we’re not gonna see 9-0 decisions, but we’re gonna see more debate inside the building over where exactly to draw the line. The message you should take away, I think, from the Supreme Court’s decisions should tell you there are too many patents, it’s inhibiting innovation, it’s getting in the way. The Supreme Court seems to think the Federal Circuit and the PTO are being too permissive and we need to take a step back. But you can’t parse words in these Supreme Court’s opinions yet, they’re too new to these questions.

QUINN: I think that’s exactly right. I guess that’s the real fear now because as you’re going through the judiciary you have these cases that have spoken in such broad language about claims that were so broadly written, in at least a couple cases. You’re seeing what in my words I will call “real technology” or “real innovation” being held up by these broad strokes. And I can’t—

GOLDSTEIN: I have another case just so you know. So that is anti-virus software. Right? So it is like solving a problem about a computer and the district court says nope, not patent eligible. Even though because it’s implemented on a machine even though it is but it seems to be exactly what the Supreme Court was talking about that the range of software patents that is available is the patents that actually are very computer directed, you know, dealing with a unique computer problem. But, nope. The overwhelming majority of 101 decisions now as you well know are ineligible, ineligible, ineligible, ineligible. I think that the lower courts have really over read the Supreme Court’s decisions which were intended to narrow 101. Everybody agrees with that. But they seem to have just run with it a little too fast, a little too far and there’s going need to be a bit of course direction.

QUINN: I agree. I just finished writing an article about wind energy and GE. I saw this commercial that sent me down this path. The commercial said the windmills of the future are going to follow the wind. And then if you look into what GE’s doing they have this elaborate software process that can allow for analysis of the data to predict how the windmill should be operating for its most optimal efficiency moving forward including figuring out whether operators need to be tilting the blades, when should we tilt the blades knowing that at certain times the wind is coming from various directions and all that sort of thing. And I think to myself is well, tilting the blades that’s just an idea, you know, the fact that nobody else has done this and that they can squeeze out an extra 5% from a wind farm doesn’t seem to be relevant in the 101 inquiry, which I think is a real problem. It would be relevant if we were talking about obviousness under 103. It would be a very relevant.

GOLDSTEIN: Yes it would be very relevant. And that’s probably what we should be talking about. I really agree with you. These are the kinds of innovations that we want and these are the kids of innovations that if companies start to believe they won’t get patent protection on they are not going to spend $20 million figuring out the solution, or if somebody does figure it out then they’re gonna keep it a secret.

QUINN: Right.

GOLDSTEIN: The foundation, the very notion that there are too many patents accepts that there need to be patents. Our problem is that we are getting too close to the notion that a lot of innovations are going to be not patent eligible.

QUINN: Yes. I’m afraid that that’s unfortunately the consequence. We’re seeing it right before our eyes right now. I don’t know where it all ends, but I think what we should be doing is go back to having 101 be a very low threshold, a very low hurdle and using the other sections as they were designed to be used. Unfortunately, we’re stopping innovation from proceeding and that was the fundamental purpose of having a wider open 101 analysis.

GOLDSTEIN: Right. We have substituted patent eligibility for obviousness, which seems a much better fit. I did KSR, just seems a way better fit.

QUINN: Yes. Okay, well, that’s really all I have at this point. I appreciate you taking the time to speak with me today.

GOLDSTEIN: Okay, such a pleasure. Great to talk to you again and we’ll hope for the best.

QUINN: Good talking to you, too.

The Author

Gene Quinn

Gene Quinn is a Patent Attorney and Editor and founder of IPWatchdog.com. Gene is also a principal lecturer in the PLI Patent Bar Review Course and an attorney with Widerman Malek. Gene’s specialty is in the area of strategic patent consulting, patent application drafting and patent prosecution. He consults with attorneys facing peculiar procedural issues at the Patent Office, advises investors and executives on patent law changes and pending litigation matters, and works with start-up businesses throughout the United States and around the world, primarily dealing with software and computer related innovations. is admitted to practice law in New Hampshire, is a Registered Patent Attorney and is also admitted to practice before the United States Court of Appeals for the Federal Circuit. CLICK HERE to send Gene a message.

Gene Quinn

Warning & Disclaimer: The pages, articles and comments on IPWatchdog.com do not constitute legal advice, nor do they create any attorney-client relationship. The articles published express the personal opinion and views of the author and should not be attributed to the author’s employer, clients or the sponsors of IPWatchdog.com. Read more.

Discuss this

There are currently 36 Comments comments.

  1. Paul Cole September 9, 2015 12:26 pm

    It is an extremely welcome development to see an attorney of the calibre of Tom Goldstein on the team.

    Unfortunately the Federal Circuit has made a number of errors of law in its interpretation of Mayo and Myriad. The Mayo test as applied in Ariosa would invalidate a large number of traditional pharmaceutical claims which it was the expressed intention of the Court to preserve. It is clear from the decision of the Supreme Court it expected the the lower courts to refine the test rather than amplify it, and I believe that the point was mentioned in oral argument. It is often overlooked that the sticking point between the majority and Justice Stevens in Bilski was categorical exclusion which the majority refused to create. The holding in Myriad is very narrow and is not only explained in words of one syllable but is set out twice, once at the beginning of the opinion and again at the end. Is there any special reason why the lower courts refuse to understand and follow the holding of Justice Thomas when he went out of his way to explain with the utmost clarity what the Court’s holding was and what its limits were?

    There was a holding on cDNA and an observation that short cDNA sequences might not benefit from that holding and might not be automatically eligible if they did not cross an exon-intron boundary. That does not mean that they are ineligible as the Federal Circuit seems to believe, but merely that they do not benefit from automatic eligibility and in order to be eligible must both be isolated and exhibit new utility as in Hartranft.

    It is inevitable that difficult legal and technical issues will need to be explained to judges inexperienced in patent law and the ability to do this and to get the essentials across is an essential advocacy skill. Notoriously the Federal Circuit confused naturally occurring cffDNA with amplified short sequences which are synthesized from single nucleotides using PCR. Saying that the amplified DNA sequences are a product of nature is in error by a quantifiable factor of between 1000 and 1,000,000 as pointed out in my published postings and in my brief to the Federal Circuit. It should not be difficult to explain, even to scientifically untrained judges the difference between a long naturally occurring molecule and shorter synthetic ones, or the chemical and practical differences between dilute naturally occurring material and more concentrated synthetic material. As is well known to those who practice in our field, that kind of difference has been acknowledged in patent law for over a century.

    And I do not think that the judges are blind and prejudiced, although many senior people I have met in the US say that they are. If you read the oral argument in Myriad and consider some of the very penetrating questions the Justices raised, there is no real doubt that they understood the issues far better than they were given credit for. Even the analogy of wood cut from a tree is more in point than many believe. International isolation was a concern and in my view the holding of Justice Thomas was carefully crafted not to place the US in breach of its obligations under the TRIPS Agreement which the US had itself promoted. But in my view he was perfectly well aware that the BRCA1 patent had not described the isolation of the wild-type gene as a tangible molecule in a test tube as alleged, basis for that belief being that the judges of the Federal Circuit had already figured that out and explained it in their opinions. So good advocacy treats the judges as people without a specialised background, but quick learners of high intelligence.

    It is greatly to be hoped that the case will be taken en banc and that the US will return to its former internationally harmonised position, at least in the pharmaceutical and biotech fields.

  2. step back September 10, 2015 1:57 am

    Paul @1,

    You come on stage with truly saturated red rose glasses when thinking you can rationally explain even to “scientifically untrained judges” concepts that often take years of training in the hard sciences for younger, more agile learners (college students) to grasp. There is no such thing as “quick learners of high intelligence” when it comes to highly complex material that requires great swaths of background knowledge to understand. The only thing you end up with is a Planet of Apes panel hopping up and down and bickering over whether it’s more like plucking a leaf from a branch of the tree or lathing a baseball bat from the trunk of the tree.

    At the very root of this plant biology lesson is the fact that neither SCOTUS nor the CAFC have the Constitutional right to take on an enumerated legislative power (Article 1, sect 8, clause 8) that is granted exclusively to the Congress. 35 USC section 101 is very clear. “Any” new and useful composition of matter. “Any” new and useful process. Period.

  3. EG September 10, 2015 5:34 am

    SB,

    I completely concur with your second paragraph. That is by far the biggest problem with what the Royal Nine has done in all of these patent-eligibility cases. The Federal Circuit has simply been beaten (and improperly so in my view) into submission to bend it to the “power-grabbing” will of Our Judicial Mount Olympus.

  4. Paul Cole September 10, 2015 6:18 am

    I do not think that references to the “Royal Nine”, “Judicial Mount Olympus” or “power-grabbing” are of the slightest help and weaken rather than strengthen the likelihood of adjustment of section 101 interpretation since they are not calculated to win judicial respect or sympathy.

    If you read check the factual background and the earlier decisions in Mayo and Myriad, you will completely understand why the outcome was the way it was, although you might in the case of Mayo be troubled by some of the reasoning. And if you read Hartranft carefully and understand the origins of “manufacture” in early UK law, you might begin to understand why leaves from trees and wood turned into baseball bats have relevance.

    The whole point of our profession is to explain and define technology in terms that can be understood by people outside the specialised field. If you have a jury trial as in the US, then Mom and Pop have to understand the invention, at least after it has been pointed out by counsel and by the technical experts. The important technical points in Ariosa could be understood by an intelligent 15 year old if properly explained, and it is part of the advocates’ job to be able to do that and answer detailed technical questions on demand.

  5. Anon September 10, 2015 8:06 am

    Paul,

    You are playing into the game of judge made law.

    It is your actions that are not helpful.

  6. Night Writer September 10, 2015 9:33 am

    Paul Cole: I do not think that references to the “Royal Nine”, “Judicial Mount Olympus” or “power-grabbing” are of the slightest help and weaken rather than strengthen the likelihood of adjustment of section 101 interpretation since they are not calculated to win judicial respect or sympathy.

    This is a continued theme I read on the blogs. That somehow we are to ignore reality and somehow try to find a way to please the kings and queens. Your approach Paul is a mistake. In the final arguments in briefs and oral arguments these types of arguments cannot be made, but we have to deal with reality and what stepback wrote is what the reality of the situation is.

    The reality is that Obama should have appointed science literate judges to the fed. cir. so there was some hope of them understanding the issues. Obama did not. That is reality. It is nothing but reality.

  7. EG September 10, 2015 12:24 pm

    Paul,

    With all due respect, “win[ning] judicial respect or sympathy” with SCOTUS is pointless when they operate, as whole, outside the framework of our Constitution, and are frankly anti-patent. We saw this happen in the 60’s and 70’s, and fortunately then our Congress understood that SCOTUS had exceeded its constitutional authority and created the Federal Circuit as not so subtle hint to SCOTUS to “stay out” of patent matters. Up until 2006 or so, SCOTUS heeded that warning but then decided it was time for another “power-grab” (and I’m not going to retract that statement because it’s true). The only way to put this Royal Judicial Genie back in its bottle is for our Congress to not abrogate their role under the Patent Clause as they’ve done for the past 9 years or so. No one is above that law and that includes the 9 who sit on the highest court in this nation.

  8. step back September 10, 2015 12:42 pm

    Gene,
    This post has disappeared off your main blog page –at least from the mirror server that serves it up to my area (Silicon Valley). 🙁

  9. step back September 10, 2015 12:53 pm

    Paul,

    It is with great trepidation that I and several others here have started mocking the Mount Olympus Nine.

    In law school we are trained to have the utmost respect for judges because they wield great power.

    On the other hand, if you study the dark arts of rhetoric, you learn that “appeal to authority” (look it up on Google) is one of the favorite tactics for arriving at conclusions based on false logic.

    Patent attorneys are not well trained in Constitutional law, in jurisdictional rights and limits of Article III and Article I tribunals. So naturally, when the highest Court in the land says it is so, it must be so. Except it is not.

  10. Paul Cole September 10, 2015 1:40 pm

    Goldstein: ” … the Supreme Court isn’t exposed to a lot of the cases and bad cases can make bad law. And you do have to think about cases like Bilski, about cases like Mayo as being ones that didn’t seem like good candidates to use to define 101 eligibility”.

    In the recent Thales litigation concerning US Patent 6474159 the following masterfully drafted claim appears containing all the essential detail for technical success (or not!):

    22. A method comprising determining an orientation of an object relative to a moving reference frame based on signals from two inertial sensors mounted respectively on the object and on the moving reference frame.

    Res ipsa loquitur, as they say. The decision was on a slightly fuller claim but still found ineligibility. No doubt an invention is to be found in the specification, but the patentees’ misfortune is that it somehow did not find its way into the main independent claims.

    Upsetting the judges that we need to influence is not the way forward. Careful reasoned argument, mastery of the facts and good written description and claim drafting will give better results, at least in the medium term.

  11. EG September 10, 2015 2:24 pm

    “Upsetting the judges that we need to influence is not the way forward. Careful reasoned argument, mastery of the facts and good written description and claim drafting will give better results, at least in the medium term.”

    Paul,

    Unfortunately, the 9 Justices on the SCOTUS are not interested in “careful reasoned argument” from us “mere mortal” patent attorneys, no matter how much we try to provide it to them. As witnessed by Alice, why are we “mere mortals” never provided with any definition of what an “abstract idea” is? Why do these Justices ignore scientific reality as they did in Myriad? Why did Justice Alito grossly and embarrassingly mischaracterize the Federal Circuit en banc majority ruling in Akamai. Why do these Justices continue to make “policy decisions” that contravene the express language of the patent statutes, i.e., there are no “implicit exceptions” to patent-eligibility are. Sorry, but the Royal Nine are simply not listening to reason at all when it comes to patent law jurisprudence, at least as we “mere mortal” patent attorneys understand it. Frankly, only Congress can rectify the mess the Royal Nine have created by taking them “behind the woodshed” and legislatively “spanking” them as they did when they created the Federal Circuit, including stripping SCOTUS of jurisdiction to hear any patent case (and our Constitution permits Congress to do just that as even SCOTUS acknowledges).

  12. EG September 10, 2015 2:31 pm

    Paul,

    One more thing: when you have a Justice like Breyer (a philosophy wonk) denigrate what I do, my dad did, and my brother does by derisively referring to it as the “draftman’s art” in Mayo, it’s really hard to be diplomatic about SCOTUS.

  13. Paul Cole September 10, 2015 2:51 pm

    EG

    Have a look at my guest posting on Mayo on the Patently-O blog:

    http://patentlyo.com/patent/2012/04/guest-post-prometheus-v-mayo-a-european-view.html

    My conclusion was that “Perhaps the wisest course is to take the opinion at its word and accept that beyond disapproving the CAFC/EPO approach Mayo makes no new rule and does nothing positive to explain what is patent-eligible and what is not.”

    I also made a posting on this blog entitled “The Wrong Rat” expressing the view that a decision with the right outcome but for the wrong reasons can confound jurisprudence nearly as much as a decision that is entirely wrong.

    http://www.ipwatchdog.com/2012/05/06/prometheus-v-mayo-the-wrong-rat/id=24622/

    It is perfectly possible to be critical, even harshly so, without being derisive, and it is always better to criticise the work product or the system within which the work is produced rather than the individuals.

  14. A Rational Person September 10, 2015 2:52 pm

    Paul,

    “Careful reasoned argument, mastery of the facts and good written description and claim drafting will give better results, at least in the medium term.”

    Can you provide an example of a carefully reasoned argument and mastery of the facts changing the mind of the supreme court justice in a patent case?

  15. step back September 10, 2015 3:51 pm

    EG and Paul,

    Let me submit that it is mostly a systemic problem.

    In theory, so-called “friends” of the court (amicus curie) submit truthful and informative briefs that aid the court in better understanding the issues.

    But what if the “friends” are cunning, deceptive and persuasive and also not interested in reaching the truth? What if they have economic interests pointing the other way? Interests in convincing the court that Gee whiz, yes it is just like plucking a leaf from a branch or lathing a baseball bat out of the tree’s trunk?

    What if, as feeling human beings, the SCOTUS 9 are all too happy to believe that they are geniuses, that they easily grasp what’s going on and that yes, it is just like plucking a leaf from a branch or lathing a baseball bat out of the tree’s trunk? What if the Emperor’s new clothes are made of threads so fine that only the wisest and most loyal among his subjects can see them? What happens if a “disrespectful’ young subject says, look Mom, the Emperor walks naked?
    In the real world everyone else says, Stop being disrespectful young man, know your place. /end sarcasm

  16. Night Writer September 10, 2015 4:17 pm

    No Paul, no. Stop conflating actual practice and discussing the character and opinions of the judges/justices. Next you will tell us that we should try to make sense of 101 jurisprudence instead of seeing it for what it is–judicial activism that makes no rational sense. Even your example above of a claim of US Patent 6474159 illustrates your problem. This was found to be ineligible under 101 rather than obvious under 103.

    With all due respect Paul, you are not an American. You don’t understand our system or our people. What we Americans know is that if something is dirty then you better dig to the core of it and not spare anyone’s feelings in the digging. We are dealing with a rotten core. We also know that our system has been hijacked by big corporations. We do things differently here.

    It is bizarre how people from the UK constantly try to tell us how to behave. I used to work with a patent attorney from the UK who would say about the same stuff you do. It is your culture —not ours. I also used to do some work in the UK and people there would constantly correct my word usage or pronunciation as if American English were inferior. Wow, what an ego. News flash–revolution and separate country!

  17. Paul Cole September 10, 2015 5:25 pm

    To quote Robert Burns

    O wad some Pow’r the giftie gie us
    To see oursels as ithers see us!
    It wad frae mony a blunder free us,
    An’ foolish notion.

    Put yourself in a position of a Federal judge not used to patents, their form and language or the system of law under which they operate and confronted with the claim 22 that I quoted above. He or she will not care too much about the niceties of section 101 or 103 – but instead will dismiss the claim as nonsense and want the case out of court by the quickest possible route. The judge may then come away with a lasting distaste for the patent system.

    If the Supreme Court justices have developed a distaste for patents, was that mere politics or was it because we served them up Bilski and Alice? Was it because litigators pretended that the BRCA1 gene had been isolated in it full-length wild form when that technical achievement had not been reported in the patent sued on? I am in good company – see the quote from Tom Goldstein at [10].

    And on teaching behavior, probably the most helpful book I have read in my professional career was “How to win friends and influence people.” Its author, very famously, was an American.

  18. step back September 10, 2015 8:23 pm

    Paul @16

    I think you have hit upon a fundamental difference in comment #16 between how US attorneys think and how ROW attorneys might think, which I think is Night Writer’s point at comment #15.

    Here, in the USA we are supposed to be a nation run by law not by men.
    Our code section 35 USC 101 says “ANY new and useful composition of matter”. Period

    Our Article 1, section 8, clause 8 of our Constitution says it is the Congress that shall have the exclusive right vested in it “To promote the Progress of Science and useful Arts, by securing for limited Times to Authors and Inventors the exclusive Right to their respective Writings and Discoveries.” Period.

    There is no law here that says, Oh by the way, should the highly honored justices of the Supreme Court say otherwise, all that bloody other stuff goes easily flushing down the toilet. There lies the rub and the differences in due and owed respect.

  19. Anon September 11, 2015 12:41 am

    “I’m mad as hell and not going to take it anymore”

    Oops, that was meant for a movie thread. Well, it fits here too.

    Reminder for Mr Cole: Churchill and Chamberlain. Guess which one wanted peace for his time (faux respect and false politeness) and guess which one knew better? As others have intimated, we have a rule of law in this country that does NOT place the Supreme Court above the law. Each attorney here swears an oath upon being sworn in. NONE of those oaths place the Supreme Court above the constitution, of which the separation of powers is a stalwart protection.

    It is time to get mad.
    It is time to repeat the actions that led to the Act of 1952.

  20. Paul Cole September 11, 2015 2:21 am

    @ Step Back

    An apology is owed for omitting to investigate the matters raised in comment [9]. Syllogistic reasoning and appeals to authority are issues of renewed interest to me since my involvement with Section 101 issues, and a book by Justice Scalia and Bryan Gardner draws renewed attention to to the role of syllogism in case law. Another topic of investigation is what the holding of a court in any particular case truly is, and although UK and US law both have the doctrine of precedent and stare decisis there appear to be differences in the way that a holding is identified.

    It is worth reiterating the language of Section 101:

    Inventions patentable. Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.

    On issues of statutory interpretation in the US I am unashamedly copying from Wikipedia because what is said there is apt to the present case:

    “In the United States, the courts have stated consistently that the text of the statute is read as it is written, using the ordinary meaning of the words of the statute.
    “[I]n interpreting a statute a court should always turn to one cardinal canon before all others. … [C]ourts must presume that a legislature says in a statute what it means and means in a statute what it says there.” Connecticut Nat’l Bank v. Germain, 112 S. Ct. 1146, 1149 (1992). Indeed, “[w]hen the words of a statute are unambiguous, then, this first canon is also the last: ‘judicial inquiry is complete.’ ”
    “A fundamental rule of statutory construction requires that every part of a statute be presumed to have some effect, and not be treated as meaningless unless absolutely necessary.” Raven Coal Corp. v. Absher, 153 Va. 332, 149 S.E. 541 (1929).
    “In assessing statutory language, unless words have acquired a peculiar meaning, by virtue of statutory definition or judicial construction, they are to be construed in accordance with their common usage.” Muller v. BP Exploration (Alaska) Inc., 923 P.2d 783, 787–88 (Alaska 1996)”

    On this basis, there is a straightforward argument that the claimed subject matter here is admissible because the process is new (not in dispute) and and useful (also not in dispute) and therefore falls straightforwardly within the literal wording of the statute. In these circumstances there is no room for a judicial exception, and if any such exception as in this instance the product of nature exception is extended to cover the present process than such an extension is an inadmissible judicial extension of judicial authority into the legislative power of Congress. Justice Scalia at least would be sympathetic to an argument on these terms because it accords with his professed views.

    You then have the question of what is the key difference between the present case and that in Mayo. It is easier to persuade a court that a case is distinguishable than that earlier authority should be reversed, so pointing to a key difference is potentially a useful way forward. In this case the hand of man is applied with a new physical action because the step of amplification is applied to serum or plasma previously discarded as medical waste. In Mayo all the actions in the claimed method were old, and the only novelty was in interpretive information to which information the hand of man was not required to be applied. In the language of US v Adams, the use of maternal serum or plasma as starting material sets the claimed process apart from previously known methods.

    I differ from Anon in that it is not yet time to get mad. it is time to get detailed, analytical and determined.

  21. Eric Berend September 11, 2015 4:07 am

    To the estimable Mr. Cole:

    I beg your pardon, good sir, but I must respectfully and vehemently disagree. If the viewpoint of an actual inventor with some significant understanding from technical, scientific and legal points of view means anything; then I would pray ask you consider well, what you accede to.

    When the cunning and dishonest enemies of the U.S. system of patent laws unabashedly and ruthlessly attack it without the slightest regard for collateral effects in U.S. society or its economy, then it is time to recognize that established legal and civil discourse has been abrogated by that faction. Therefore, if the defense of whatever essential aspects are considered necessary and special, is worthwhile; as with the U.S. system of patent law; then, such unwarranted restraint simply cedes the field to the enemy without sufficient assurance of gain or improvement.

    Reputedly, some six justices of the CAFC owe some degree of influence in their appointments, to the influence of Google, Inc. Some 20 members of Pres. Obama’s administration are former Google, Inc. employees, far outnumbering those of Goldman Sachs. The son of Congressman Goodlatte is an executive at Facebook, Inc.

    These are impeachable offenses, played out almost flamboyantly; in plain sight. These associations bearing blatant evidence of nepotism and influence-peddling here, makes old “Teapot Dome” look like a choirboy’s operation, by comparison.

    At a certain point, with whatever respect and civility being earnestly proffered being roundly ignored (SCOTUS, in effect: “I can’t heee-ar you” with derision for patent attorney practitioners), it is time to ‘speak truth to power’ as part of the essential process of redressing wrongs through petition and protest in the American political system.

    When? When will the SCOTUS that is so adamant and precise in its advocacy of the U.S. Constitutional doctrine of the separation of powers in some other decisions, apply that rigor to make a proper application of Section 1, Article 8, Clause 8?

    Obviously, I fall squarely within the school of thought most often represented here by “step back”, “Anon” (above) and “EG”.

  22. EB September 11, 2015 4:07 am

    To the estimable Mr. Cole:

    I beg your pardon, good sir, but I must respectfully and vehemently disagree. If the viewpoint of an actual inventor with some significant understanding from technical, scientific and legal points of view means anything; then I would pray ask you consider well, what you accede to.

    When the cunning and dishonest enemies of the U.S. system of patent laws unabashedly and ruthlessly attack it without the slightest regard for collateral effects in U.S. society or its economy, then it is time to recognize that established legal and civil discourse has been abrogated by that faction. Therefore, if the defense of whatever essential aspects are considered necessary and special is worthwhile; as with the U.S. system of patent law; then, such unwarranted restraint simply cedes the field to the enemy without sufficient assurance of gain or improvement.

    Reputedly, some six justices of the CAFC owe some degree of influence in their appointments, to the influence of Google, Inc. Some 20 members of Pres. Obama’s administration are former Google, Inc. employees, far outnumbering those of Goldman Sachs. The son of Congressman Goodlatte is an executive at Facebook, Inc.

    These are impeachable offenses, played out almost flamboyantly; in plain sight. These associations bearing blatant evidence of nepotism and influence-peddling here, makes old “Teapot Dome” look like a choirboy’s operation, by comparison.

    At a certain point, with whatever respect and civility being earnestly proffered being roundly ignored (SCOTUS, in effect: “I can’t heee-ar you” with derision for patent attorney practitioners), it is time to ‘speak truth to power’ as part of the essential process of redressing wrongs through petition and protest in the American political system.

    When? When will the SCOTUS that is so adamant and precise in its advocacy of the U.S. Constitutional doctrine of the separation of powers in some other decisions, apply that rigor to make a proper application of Section 1, Article 8, Clause 8?

    Obviously, I fall squarely within the school of thought most often represented here by “step back”, “Anon” (above) and “EG”.

  23. Eric Berend September 11, 2015 4:26 am

    Hi Gene,

    Thank once again for an excellent article that gets right to the heart of these issues.

    Please note that I have tried several times to post a cogent comment in the above discussion and found it disappeared each time. Is this due to the ‘spam blocker’?

  24. Anon September 11, 2015 7:03 am

    It is not just mad, Paul – it is the realization that your wanting to get “detailed, analytical and determined” is NOT working.

    It is also the realization that “playing nice” while you are attempting to be “detailed, analytical and determined” is being taken the wrong way and you are being abused.

    There are simply things that one should not be polite about.

    The treatment of the Rule of Law by the Supreme Court is one of those. That is one reason I advocate for the Congress to engage in jurisdiction stripping. Patent appeals are not one of those areas of law that are within the Court’s mandatory jurisdiction, and it is entirely within the constitutional power of Congress to bar the Court from patent appeals. I am not sure just why you seem reticent to see and admit the undue influence within the Court. You seem to want to be TOO analytical and tiptoe around a raging bull, thinking that being delicate will somehow protect you.

    It won’t.

    It hasn’t either in the pragmatic real world sense of how lower courts have taken the direction from the Supreme Court.

    What you want sounds all nice and good from a “thinking man’s” perspective, but at some point legal reality and pragmatism is going to have to be included in your analytics.

  25. Night Writer September 11, 2015 7:33 am

    I think part of the reason that the tone of the discussion degrades so much when talking about the Fed. Cir. judges and Royal 9 is that so much of what they write is condescending and ridiculous. They insult our intelligence with the nonsense they write. In reality, it is plainly judicial activism and the nonsense they try to wrap it around and make us eat is what is engendering the anger and disdain for the judiciary.

    If Congress passed a bill that said X is no longer patent eligible, then OK. What can you do. But, when a judge generates shear nonsense to accomplish the same goal, then it is time to fight.

    Just ask yourself, where can you find the four judicial exceptions in the Constitution? They aren’t there, which means each time they are trotted out by the Royal 9 that they need to be justified with empirical evidence. The Royal 9 have, in effect, added to the Constitution a clause with the four judicial exceptions.

    The Fed. Cir. writes opinions that are so offensive that I think they rise to the level where they could be impeached based on what they wrote. For example, Taranto recently wrote that merely simulating human thought was per se unpatentable. Fortunately for the sane world it was not precedential. But, a statement like that should be enough to impeach Taranto.

    They are Paul, I am afraid to say, an arrogant, ignorant, offensive lot who we would all be better off without. That is reality.

    Although, I agree with you that being determined and detailed (and civil) is the way to fight the tyrants in public.

  26. Paul Cole September 11, 2015 10:03 am

    As I read Myriad the judicial exceptions are three: laws of nature, natural phenomena and abstract ideas. Natural phenomena has been taken to include substances occurring in nature. In Mayo these were listed as phenomena of nature, though just discovered, mental processes and abstract intellectual concepts. No reasonable practitioner would consider these exceptions patent eligible: a law of nature is not a process, nor is it a machine, nor is it a manufacture, nor is it a composition of matter. The same could be said for each of the other broadly stated judicial exceptions. As originally stated, therefore, there is no overlap between the words of the statute and the judicial exceptions so that the issue of interference with the legislative power of Congress simply does not arise.

    It is doubtful whether there would be any quarrel with a de minimis rule where the claim language gives the appearance of complying with the statutory language when there is in fact no such compliance as a matter of substance. In Mayo, Justice Breyer said:

    “If a law of nature is not patentable, then neither is a process reciting a law of nature, unless that process has additional features that provide practical assurance that the process is more than a drafting effort designed to monopolise the law of nature itself. A patent, for example,could not simply recite a law of nature and then add the instruction “apply the law.” Einstein, we assume, could not have patented his famous law by claiming a process consisting of simply telling linear accelerator operators to refer to the law to determine how much energy an amount of mass has produced (or vice versa). Nor could Archimedes have secured a patent for his famous principle of flotation by claiming a process consisting of simply telling boat builders to refer to that principle in order to determine whether an object will float.”

    The key holding in Mayo is that:

    “the “wherein” clauses simply tell a doctor about the relevant natural laws, at most adding a suggestion that he should take those laws into account when treating his patient.”

    It is difficult to discern anything in these passages which is either offensive or incorrect. In particular, there does not seem to be any general disapproval of the efforts of patent attorneys in drafting claims, merely a direction to consider whether the result of the drafting effort falls outside the de minimis rule.

    It is possible to derive two significant principles from what has been said in Mayo bearing in mind the particular context in which these remarks are made. Firstly, insofar as the judicial exceptions encroach upon the language of the Congressional statute they should be narrowly construed, this also being in accordance with the general canon of construction for exceptions. Secondly the Court is applying a de minimis rule, and such rules, inherently, are narrow. This interpretation accords with the general caution with which the Mayo opinion is expressed, and the narrow holding put forward (twice!) by Justice Thomas in Myriad.

    The trap into which a number of the Federal Circuit judges have fallen is to give an over-broad interpretation to the exclusion cases, especially in the field of pharmaceuticals, natural products and biotechnology. The expectation was that the holdings of the Supreme Court are profound and far-reaching whereas in truth in Mayo and Myriad they were narrow and specific.

    As pointed out, I am based in England, not the US. But I suspect that the Congress will strip the Supreme Court of its appellate jurisdiction in patent matters about the same time as some naturalist firsts spots the BBC’s famous flying penguins (well worth searching for in You Tube for those unaware of these remarkable creatures). And Night Rider is correct that the judicial exceptions are neither in the Constitution nor in the statute, their original purpose being not to limit the statute but to explain what it was not intended to cover. Insofar as they encroach on the statutory language via the de minimis rule, that encroachment should be kept to a minimum, not treated expansively.

    It is a matter, I submit, of explaining the fundamentals clearly, simply and straightforwardly but with firmness.

  27. step back September 11, 2015 10:20 am

    Paul@19

    Good to hear that you study the dark arts of rhetoric and logical fallacies:
    https://en.wikipedia.org/wiki/Fallacy

    Most technical people do not devote much attention to the issue and take it as axiomatic that, because they are technical, ergo they are logical.

    Of course that itself is a logical fallacy of the ‘syllogism’ kind as you refer to it.

    All technical people (and all judges) are human.
    All humans are susceptible to engaging in false logic.
    Ergo …

    The thing that gets people like Anon mad as H__ is the frustration of not seeing the mind games that are being played at the SCOTUS and CAFC levels and therefore not understanding how such high and mighty people can still believe the Emperor wears clothes. Not just mere clothes but those made of the finest threads that only the truly intelligent (and loyal) people can see.

    As for me, I don’t get that mad because I admire the craftsmanship of the false rhetoric used by the “friends” of the court (amicus curie) in twisting the minds of the judges. It’s similar to the enjoyment one gets in watching a matador toy with the bulls before applying the final thrust.

    If you follow in detail some of the remarks made by our esteemed and infallible Justices, there was a point (IIRC in Myriad) where Scalia J. admitted he does not know WTF is going on (is it a leaf?, a bat?, a leaf?, …) but he was going to go along with the majority anyway on the assumption **they** know WTF is going on (which they don’t –what a laugh).

  28. step back September 11, 2015 10:28 am

    Paul @23

    It seems we are posting at the same time, on the same subject (Myriad v. ACLU) but with opposite view points as how to understand the decision.

    I apologize for the insinuated vulgarities. I went to see this American comedian, Lewis Black the other night. He uses a lot of vulgarity and finger pointing to make his point and somehow that has infected my mind for the short term.

    With that said the Mount Olympus 9 truly don’t know WTF they are talking about. There is no such thing as a law “of nature”.

    https://en.wikipedia.org/wiki/Law_of_nature

  29. Anon September 11, 2015 10:31 am

    Paul,

    Your submission is understood.

    Repeating it won’t make it work any better than it is – if by “work” we recognize that your submission is in fact failing (and please, don’t blame the attorneys – they do not control the legislating from the bench no matter how careful, thoughtful, clear, simple or straightforward that they may present the matter).

    That is why the cynical among us have “already told you so.”

    Do you enjoy being told so again and again?

  30. Paul Cole September 11, 2015 10:35 am

    I have to thank my US friends for an interesting and thought-provoking discussion and go off and do some regular work. Just a reminder that if all goes well I will be at the AIPLA Annual Meeting and will enjoy continuing this discussion and appropriate American beverages (there are excellent wines from California and the produce of Mr Jack Daniels is excellent for a late evening).

  31. step back September 11, 2015 10:46 am

    Paul @26

    Ditto
    And ditto (need to get to work)

    Much enjoyed the back and forth from the American and British perspectives.
    I guess we Yanks still remain a rebellious bloody lot with no respect for them who are supposed to be smarter than us and who are to be blindly obeyed because of their station. (The King can do no wrong.)

    Cheers.

    (Gene sorry for that mix up.)

  32. A Rational Person September 11, 2015 12:01 pm

    Paul@25

    “If a law of nature is not patentable, then neither is a process reciting a law of nature, unless that process has additional features that provide practical assurance that the process is more than a drafting effort designed to monopolise the law of nature itself. A patent, for example,could not simply recite a law of nature and then add the instruction “apply the law.” Einstein, we assume, could not have patented his famous law by claiming a process consisting of simply telling linear accelerator operators to refer to the law to determine how much energy an amount of mass has produced (or vice versa). Nor could Archimedes have secured a patent for his famous principle of flotation by claiming a process consisting of simply telling boat builders to refer to that principle in order to determine whether an object will float.”

    Under 35 USC 101, as written and interpreted by the courts for decades, why should Einstein or Archimedes not be allowed to patent methods similar to what you have proposed? 35 USC 101 explicitly states that discoveries are patent eligible, so why shouldn’t a method that applies the discovery be patent eligible under 35 USC 101?

    Except for the Supreme Court’s decisions in Mayo and Myriad, why must there be something “significantly more” than the application of a natural law? What is the legal or constitutional basis for the Court’s new “preemption doctrine” in Mayo?

    The Court’s new preemption doctrine is pure public policy based legislating from the bench that ignore the fact that 35 USC 102 and 35 USC 103 address the supposed “preemption problem” that the Supreme Court relies upon to justify its judicial legislation.

    Furthermore, by adding the totally subjective new “significantly more” requirement the Supreme Court has decreased both justice and fairness in the determination of patent eligibility by patent examiners and the courts with no explanation by the Court why their new subjective test was worth the unfairness and injustice it would cause.

    The Mayo and Myriad cases are classic examples of why legislating from the bench is a bad idea, because courts in general do a poor job of considering all of the likely consequences of their action.

  33. Paul Cole September 11, 2015 3:55 pm

    @ A Rational Person

    If you had read my posting more than superficially you would have understood that the quoted passage comes form Justice Breyer, not from me.

    Before dismissing the opinions of the Supreme Court and whining about unfairness and injustice, it pays to study the opinions of the court and work out what the holdings actually are. If you did that you would find that you have far less to complain about than you allege.

    Several recent decisions of the Federal Circuit have in the opinion of many people gone wrong, but it is not clear that blame for that should be laid at the door of the Supreme Court.

  34. A Rational Person September 11, 2015 5:09 pm

    Paul@32,

    I did read what you wrote. You argued that another part of the decision was the key holding of Mayo. I would suggest that the passage I quoted was really the key holding of Mayo.

    And, based on recent court decisions and decisions by Examiners at the USPTO, I think there is more support that the passage I quoted is the key holding of Mayo than there is support that the passage you quoted is the key holding of Mayo.

  35. step back September 11, 2015 8:31 pm

    Paul @25

    Whatever it is that Bryer J. is trying to say in Mayo, including the “key” holding is all whacked beyond repair.

    Mother Nature has never come down from Mt. Olympus with a set of clay tablets proclaiming her “laws”.

    There are no “Laws of Nature” describing what a current physiological state of a given patient is.

    “Processes” do not recite, let alone recite “Laws of Nature”.
    Claims recite.

    They recite that which applicant regards as his invention.
    The patent statute (section 112) does not give Breyer J. the right to contrive his own fantasies about what a claim is and what it does.

    As I said, the whole thing is whacked and deserves not our respect but rather our loud and frequent derision.

  36. Gene Quinn September 11, 2015 10:12 pm

    Eric-

    I’m not sure what is going on with the spam blocker. I continue to monitor things. I clamped down a little when spammers were able to start defeating the blocker. I may need to loosen up again. Sorry for the inconvenience and thanks for reading.

    -Gene

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